28 January 2016

Even though they had a ‘cool’ idea and couldn’t wait to get it to market, intellectual property (IP) was among the first considerations of inventors Adam Dubrich and Leigh Warren when it came to getting their Cricket Cooler® to market.

The South Australian businessmen’s Cricket Cooler® is a 33-litre cooler on all-purpose wheels. It’s equipped with built-in bail and stumps that rotate upwards and double as a handle, a bottle opener and cup holders; a must-have accessory for the cricket tragic tired of makeshift wickets scavenged from boogie boards and soft drink cans.

Dubrich’s background working in the pharmaceutical industry exposed him to the realities of product protection.

‘[Pharmaceuticals] is a litigious environment; where patent protection is crucial to business success,’ he explained. Similarly, Warren’s career in sales and marketing also came into play.

‘IP was factored in to our business right at the start – the idea phase - before we did anything else,’ said Dubrich.  

‘We took our idea for the Cricket Cooler® to one IP lawyer who was not interested in working with us and unfortunately did not share our vision.

‘Leigh was laughed out of the office. [The lawyer] told us our idea was not ‘unique’ enough [to pursue IP protection]. Thankfully, Leigh wouldn’t take no for an answer and we went to another lawyer for advice.’

Dubrich and Warren found another Adelaide-based IP specialist who they still use to guide them through the fast Yorkers product protection can deliver.

‘We had done some basic Google searches and knew from our own experience that our product was unique. But we didn’t use Australia’s IP search databases ourselves. You learn quickly that you can’t be an expert in everything. You can waste a lot of time and money trying to do things like that yourself, when there are experts who specialise in this field who can do it for you.’

Using a provisional application as a first step

The pair worked with their lawyer for about a year to get their idea ready for protection prior to bringing the concept to market. They lodged a provisional application as a first step before lodging an application for a standard patent under the Patent Cooperation Treaty (PCT).

It may have been a prudent decision as the specification paperwork for the PCT runs to some 21 pages alone and includes detailed designs. Strategically, their Cricket Cooler® patent is also worded in a way that allows Dubrich and Warren to expand their innovation to other sports down the track should they wish.

The pair was granted a standard patent in 2008. It lasts up to 20 years.Their PCT application was a useful way to apply for patents in a number of different countries simultaneously. By filing one international patent application under the PCT, applicants can seek protection for an invention in 148 countries throughout the world – an important step in protecting future export markets.

‘The advice we were given was to start with a PCT, which at that time, would cover us for 18 months. This bought us some time, allowing us the opportunity to explore which markets we would be interested in entering,’ he said.

Understandably, the businessmen are targeting cricketing nations. In 2015, they secured design registrations for the Cricket Cooler® in South Africa and in the United Kingdom (UK).

In January this year, the first shipment of Cricket Coolers® arrived in South Africa for sale. They hope to have the product on shelves in the UK for the 2016 summer by June/July.

To date, Dubrich and Warren have sold nearly 40,000 units.

Why investing in IP makes sense

Dubrich says that although it does cost money and there are a lot of upfront costs as a start-up, investing money in IP makes sense for the long term.

‘There is no point spending large sums of money designing, manufacturing and commercialising a product if the day after you launch someone steals your idea.’
‘Investing in IP upfront ensures the hard work in bringing an idea to market is protected for long enough to drive profits once commercialised,’ he said.

‘The price is insignificant compared to the costs in manufacturing and commercialising. Just because IP is not tangible doesn’t make it any less important.’

Interestingly, the Cricket Cooler® faced its first IP infringement when a promotional company advocating for a ‘well-known company’ tried to use a product similar to the Cricket Cooler® in a campaign. Letters on behalf of Cricket Cooler® seeking that the other company cease and desist were sent. The infringing advertising campaign was pulled after two weeks.

Importance of protecting your trade mark

Dubrich also recommends other start-ups invest in trade mark protection upfront.

‘Protecting your brand goes hand-in-hand with protecting your product,’ he said. ‘This is one thing I’ve learned along the way. Protecting your brand name is every bit as important as protecting your product design. For us it was a bit of an afterthought.’

Although they would have liked to have done it sooner, the business partners were granted trade marks on their cricket stump logo in 2012. While the business is going well, as with most entrepreneurial journeys, Dubrich admits to making mistakes and learning from them along the way.

Reportedly, when the pair received their initial prototype from their first manufacturer in China, the wheels fell off it; literally. Although deflated, the pair pressed on. They secured a government grant and coupled with a local industrial design group Fingo to refine their product.

The result was a new and improved version of the Cricket Cooler® that, among other things, reduced the manufacturing process from the incorporation of 43 parts down to 21.

And some wins

Last year, the pair appeared with their Cricket Cooler® on the television show Shark Tank; where a panel of successful Australian entrepreneurs seek to invest in innovative start-ups.

During the taping of the episode, Dubrich and Warren accepted an offer of $80,000 upfront, plus a $200,000 loan from RedBalloon founder Naomi Simson in return for  20 per cent equity in their company Sunscreen Umbrella Pty Ltd; makers of the Cricket Cooler®

However, after the show there is a period of due diligence. During this time both parties decided the partnership wasn’t quiet the right fit and the deal was dropped. Since then, Dubrich and Warren have found another domestic investor ‘with retail clout’ who purchased 15 per cent of the company and is helping establish international contacts.

Another coup for the Cricket Cooler® has been its securing of hardware giant Bunnings as its exclusive retail outlet in Australia. ‘[The pitch to Bunnings] was nerve racking. But they have a long association with cricket and lifestyle products,’ said Dubrich.

The pair also sells online through their website and and RedBalloon. In New Zealand, they sell through Bunnings and The Warehouse and online through their website and RedBalloon NZ.